Page images
PDF
EPUB

"The true guide," said Lord Blackburn, in Johnston Sect. 77. v. Orr Ewing, L. R. 7 App. Cas. 228, "is given by Lord Principle

Kingsdown in The Leather Cloth Co. Limited v. American

on which

Leather Cloth Co. Limited, 11 H. L. C. 538, where he Court

[ocr errors]

says: The fundamental rule is that one man has no gives relief. right to put off his goods for sale as the goods of a rival trader, and he cannot therefore (in the language of Lord Langdale in the case of Perry v. Truefit, 6 Beav. 66) "be allowed to use names, marks, letters, or other indicia by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person.

ment.

In order to succeed in an action for infringement, the Action for plaintiff must prove, (1) the existence of the trade mark; infringe(2) the imitation of the mark by the defendant, so as to injure the plaintiff; and (3) that he has not delayed in coming to the Court.

1. Registration of a trade mark is, by sect. 76, conclu- 1. The sive after five years of the right of the registered pro- existence prietor to the exclusive user of the mark; and during of the such five years it is primâ facie evidence of such right. Certificates of entries on register are admitted in evidence by sect. 96.

mark.

2. In proving infringement it is sufficient to show 2. Infringethat the defendant has imitated the plaintiff's mark, so ment. as to lead, or to be likely to lead, purchasers to believe that they were purchasing the goods of the plaintiff (see Wotherspoon v. Currie, L. R. 5 H. L. 508). It is not necessary that the marks should be identical, or even that the resemblance must be such as would deceive persons who saw the two marks placed side by side. It is sufficient if the "defendant's trade mark bears such a resemblance to that of the plaintiff's as to be calculated to mislead incautious purchasers. See Lord Blackburn's remarks in Johnston v. Orr Ewing, L. R. 7 App. Cas. 229. The spurious marks must have been used on goods of the same class as that for which the infringed mark is registered (Ainsworth v. Walmsley, L. R. 1 Eq. 518).

[ocr errors]

An innocent importer of cigars to which a spurious mark had been affixed in imitation of a registered trade mark, was held liable for infringement, and was ordered to pay costs (Upmann v. Forrester, 24 Ch. D. 231).

3. There must be no delay in coming to the Court. 3. No "The very life of a trade mark depends upon the delay. promptitude with which it is vindicated," James, L.J., quoted, with approval by Lord Blackburn, in Johnston

Injunction.

Sect. 77. v. Orr Ewing, L. R. 7 App. Cas. 230. Hence an interlocutory injunction may be moved for at once. By sect. 25 of the Judicature Act, 1873, an injunction may be granted by interlocutory order in all cases in which it appears just that such order should be made. The application may, by R. S. C. Order L. rule 6, be made ex parte or with notice, and is made by motion. As to the principles on which it is granted, see Read v. Richardson, 45 L. J. 54. An interlocutory injunction is not usually granted where there is any considerable conflict as to title, but may be ordered to stand over until trial (Mitchell v. Henry, 15 Ch. D. 181. For forms of order, see App. A.

Discovery.

Inspection.

The plaintiff may obtain discovery of such particulars as the names of the persons to whom the defendant has sold goods alleged to be marked with the plaintiff's trade mark, or other particulars material to his case, and provided such discovery would not be oppressive to the defendant (Carver v. Pinto Leite, L. R. 7 Ch. 90). By Order XXI. rule 1, of the R. S. C. 1883, interrogatories can only be delivered by leave, except where relief is sought on the ground of fraud or breach of trust. It would therefore seem that as the right of action is founded on an intention to deceive (see Johnston v. Orr Ewing, quoted above), no leave is required for delivering interrogatories in an action for infringement of a trademark.

In Orr v. Diaper, 4 Ch. D. 92, an action for discovery of the persons from whom shippers had obtained goods marked with plaintiff's trade mark was allowed against the shippers.

By sect. 6 of the Merchandise Marks Act, 1862, a demand may be made in writing to a person who has sold goods marked with a spurious mark, for names and addresses of persons who sold him the goods, and if refused, the person is liable to a fine of 57.

By R. S. C. 1883, Order L. rule 3, inspection of any property or thing being the subject-matter of the action, or as to which any question may arise therein, may be ordered by the Court or Judge. Notice of the application must be given to the defendant (Order L. rule 6), and the application must be made to a Judge (Order LIV. rule 12), and may be made any time after issue of the writ (Order L. rule 6). In Hennessy v. Bohmann, W. N. 1877, p. 14, inspection was ordered by Malins, V.-C., in an er parte application on the ground of emergency.

By sect. 21 of the Merchandise Marks Act, a Court or Judge has power to make an order for inspection of any

manufacture or process carried on by the defendant in Sect. 77. which any forged or counterfeit trade mark is alleged to be used, and of every article in possession of defendant alleged to have such forged or counterfeit mark attached to it, and of every instrument capable of making such mark, and of every trade mark alleged to be counterfeit (see App. C.).

A successful plaintiff may elect to have an account of Account. profits instead of damages; he cannot have both (Neilson v. Betts, L. R. 5 H. L. 1). Even where the defendant submits, the plaintiff is entitled to an account, though at his peril as to costs. The account will only be allowed as to profits six years before commencement of the action, but will be restricted to such profits as are properly attributable to the use of the plaintiff's trade mark (Cartier v. Carlile, 31 Beav. 292). For forms of order, see App. A., and Seton, pp. 234-237.

[ocr errors]

In an action before a jury, if infringement be proved, Damages. the plaintiff will be entitled to nominal damages, even if no special damage be proved (Blofield v. Payne, 4 B. & Ad. 410), but if the plaintiff takes an inquiry as to damages, the form of the inquiry will be "what damage, if any, has accrued to him by the unlawful use by the defendant of his trade mark (Davenport v. Rylands, L. R. 1 Eq. 302), and on such inquiry special damage must be proved in order to entitle him to damages. The Court will not assume that the amount of goods sold by the defendant under the fraudulent trade mark would have been sold by the plaintiff had the mark not been infringed, and the measure of damages is not therefore the profit the plaintiff might have made by the sale of such goods (Leather Cloth Co. v. Hirschfield, L. R. 1 Eq. 299).

a

The usual defences to an action for infringement of a Defences. trade mark are- (1) That the mark is not a trade mark. (1) Not a The registration of a trade mark does not make that trade mark. valid mark which does not possess the essential elements of a trade mark within the meaning of this Act. (2) (2) Not Non-registration in the case of new marks. As to old registered. marks, a certificate of refusal protects the rights of the plaintiff to sue (see sect. 77). (3) That plaintiff is not (3) Plainthe registered proprietor, e.g., where plaintiff is assignee tiff not the or transmittee of the original proprietor, and has omitted registered proprietor. to register the assignment or transmission. (4) That plaintiff is not the owner of the business and goodwill concerned in the class or classes of goods for which the

(4) Plain

tiff not owner of

goodwill.

(5) Delay.

(6) Mark publici juris.

Sect. 77. mark is registered. (5) Delay on part of the plaintiff in not enforcing his rights. "It is a fraud to allow a plaintiff to avail himself of delay to obtain a benefit for himself," Lord St. Leonard's quoted in Beard v. Turner, 13 L. T. N. S. 746; but this will not apply to delay for the purpose of obtaining necessary evidence (Clegg v. Edmonton, 8 De G. M. & G. 810). (6) That the mark has become publici juris, i.e., has been allowed by the proprietor to become public property (see Ford v. Foster, (7) Misre- L. R. 7 Ch. 611). (7) Misrepresentation of the plaintiff, presenta- such as statements on the tickets or labels in question calculated to deceive (Leather Cloth Co.'s Case, 11 H. L. C. 523). The use of the word "patent on a trade mark where no patent ever existed may disentitle the plaintiff to relief (Morgan v. McAdam, 36 L. J. Ch. 228; but see Marshall v. Ross, L. R. 8 Eq. 651). As to use of the word where a patent has expired, see Cheavin v. Walker, (8) License. 5 Ch. D. 850. (8) As to license. This may be pleaded, but it will not justify the defendant in so using the mark as to deceive the public by leading them to believe that his goods are the goods of the licensor (Samuel v. Berger, 24 Barb. 163).

tion.

CRIMINAL
REMEDY.

At common law the imitation of a trade mark was held not to be forgery, since forgery must relate to a No forgery document or writing (R. v. John Smith, 8 Cox, 32), even of a trade where it consists in a signature (R. v. Closs, 7 Cox, 494). To remedy this state of things, the Merchandise Marks Act, 1862 (25 & 26 Vict. c. 88), was passed, by which the imitation of a mark is made a misdemeanor.

mark at common law.

Imitation

This Act, which Mr. Justice Stephen characterises as of a trade being "exceptionally verbose and lengthy," is thus summarised by him in Arts. 364 and 365 of his Digest of Criminal Law, the full text of the Act being set out in App. C.

mark a misde

meanor.

A trade mark is defined as

1. A mark lawfully used by any person to denote any chattel to be an article or thing of the manufacture, workmanship, production, or merchandise, of such person, or to be an article or thing of any peculiar or particular description made or sold by such person.

2. Any mark or sign which, in pursuance of any statute in force for the time being relating to registered designs, is to be put or placed upon or attached to any chattel or article during the existence or continuance of any copyright or other

sole right acquired under the provision of such Sect. 77. statutes or any of them.

Everyone commits a misdemeanor, and is liable upon conviction thereof to a maximum punishment of two years' imprisonment and hard labour, with fine and imprisonment until the fine has been paid, who does any of the following things with intent to defraud, or to enable another to defraud, any person :—

(a.) Forges or counterfeits any trade mark (sect. 2).
(b.) Applies any trade mark, or any forged or counter-

feited trade mark, to any chattel or article not
being the merchandise of any person denoted or
intended to be denoted thereby, or not being
the merchandise of any person whose trade
mark is so forged or counterfeited (sect. 2).
(c.) Applies any trade mark, or any forged or counter-
feited trade mark, to any chattel or article not
being the particular or peculiar description of
merchandise denoted or intended to be denoted
by such trade mark or by such forged and
counterfeited trade mark (sect. 2).

(d.) Applies any trade mark, or any forged or counterfeited trade mark, to any thing intended for any purpose of trade or manufacture, or in, on, or with which any chattel or article is intended to be sold, or is sold, or offered or exposed for sale (sect. 3).

(e.) Encloses or places any chattel or article in, upon, under, or with anything to which any trade mark has been falsely applied, or to which any forged or counterfeit trade mark has been applied (sect. 3).

(f) Applies or attaches any chattel or article to any case, cover, reel, ticket, label, or other thing to which any trade mark has been falsely applied, or to which any false or counterfeit trade mark has been applied (sect. 3).

(g.) Incloses, places or attaches any chattel or article. in, upon, under, with, or to anything having thereon the trade mark of any other person (sect. 3).

(h.) Causes or procures to be committed any of the above offences, or aids, abets, or counsels the cominission of any of them (sects. 2, 3, 13). Every person committing any such misdemeanor as aforesaid forfeits to Her Majesty

« PreviousContinue »